Unfortunately, an unexpected issue arose in the summer of 2005 that immediately put the project into crisis mode. Based on some invalid assumptions, a software consultant from Australia recommended that their client register a trademark for the DotNetNuke name in Australia. Aside from the obvious ethical implications, the immediate reaction was that this move was based on ulterior motives that could potentially hold the entire Australian DotNetNuke community hostage. Further communication revealed that the Australian company had concerns over the official trademark registered in Canada; specifically in regards to the fact it was embedded within the application source code and binaries, and that their business investment could be compromised if restrictions were ever put on trademark usage. Ultimately this whole situation revealed a number of critical issues when it comes to trademarks. First, the holder of the trademark must publish a policy that clearly defines the allowable usage of the mark under a wide range of use cases. Second, the trademark holder must make every attempt to enforce the policy so that the mark does not become a common term and lose its value as a protected asset. Third, a trademark must be registered in every jurisdiction where it intends to be used.
To satisfy the first requirement, I firmly believe in the philosophy of "standing on the shoulders of giants." Research revealed that Mozilla had recently gone through a similar project challenge, so we decided to use their recently published trademark policy as a template for our own. The political ramifications of introducing the policy at this point seemed controversial, but absolutely necessary if we intended to protect our brand. After extensive research, review, and legal advice, we finally announced the trademark policy in conjunction with the logo guidelines in July 2005. The overall community feedback was quite positive, because the policy made every effort to emphasize our open source roots and strong community ideals.
To satisfy the second requirement, all marketing materials were updated to reflect the trademark policy guidelines, and many community sites made changes to bring their use of the trademark into compliance. We also obtained legal advice on the creation of a Trademark License Agreement to be used in situations where third parties required the right to use the DotNetNuke trademarks for specific business purposes.
The third requirement was somewhat more challenging to deal with because it had substantial financial implications. The cost to register an individual trademark in a specific jurisdiction (country) can cost anywhere from $2000.00 to $5000.00. As an organization, we simply do not have the financial means to support such a large expenditure. So instead of considering all jurisdictions, we instead decided to focus on those jurisdictions that had a large project following. These included the United States, Canada, Australia, Japan, and the European Union. This whole experience gave me a much deeper understanding of the financial commitment required by large multinational companies who wish to protect their brand around the world.